Law Firm News

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Law Firm News

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Edwards & Angell, L.L.P.

E-Discovery Amendments Are Looming, and Welcome
Stephen Prignano, a partner in the firm’s Class Action and Mass Litigation Group , was interviewed for and quoted extensively in an article entitled “E-Discovery Amendments Are Looming, and Welcome,” which was published in Compliance Week on July 11, 2006. The article discusses the growing practice of e-discovery, as requests for electronic documents have begun to surpass those for paper documents in litigation of recent years. Prignano and three other leading attorneys in the field of e-discovery offered comment on recently enacted amendments to the Federal Rules of Civil Procedure addressing electronic discovery. The amendments, approved in April and to take effect on December 1, 2006, “are welcome—they should streamline electronic discovery practice a bit and help save companies some costs in this area,” says Prignano. “The changes are reflective of the need to bring the rules more in line with what’s happening in litigation,” he continues. Especially welcomed by litigators are the amendments’ clear definitions and guidance regarding e-discovery practices, as well as the more explicitly outlined responsibilities of both litigators and companies storing and producing electronic data.

Mr. Prignano frequently lectures and publishes on e-discovery and its application in litigation. To learn more please refer to his bio (linked above) and related publications.

07-18-2006

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Dorsey & Whitney, L.L.P.

Nine Dorsey Attorneys Named New York SuperLawyers
Nine attorneys in the New York office of global law firm Dorsey & Whitney LLP have been selected as Super Lawyers by Law & Politics Magazine:

Gary Abelev
Nick Akerman
Zachary Carter
Sandy Edelman
Bruce Ewing
Jonathan Herman
Owen Marx
Neil McDonell
Richard Silberberg

Based on an extensive process of balloting, blue ribbon panel review and independent research, Law and Politics examines a wide range of legal areas to determine this select group. Fewer than five percent of attorneys in Manhattan have been selected as New York Super Lawyers.

“We’re very proud that Dorsey is so well represented in Super Lawyers,” said Bob Dwyer, partner-in-charge of the Dorsey New York office. “It’s a great honor for each individual selected and for Dorsey as a firm. Of course, you don’t have super lawyers without super clients. We’re fortunate to collaborate with so many innovative, dynamic businesses here in New York – and around the world.

07-18-2006

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McKee Nelson LLP

Seven McKee Nelson Attorneys Listed in the NY Times Supplement "New York Super Lawyers"
The New York Times put out the 2006 edition of New York Super Lawyers Manhattan Edition on Tuesday, July 18. Seven McKee Nelson attorneys were listed in this publication as ""Super Lawyers.""

Peter Rooney was featured under the Mergers & Acquisitions practice area. Reed Auerbach, Edward DeSear, William Gray, Laurence Isaacson and Robert Wipperman were likewise named under the category of Securities and Corporate Finance. Barbara Klippert was also featured under the Employee Benefits/ERISA practice area. All seven attorneys featured are partners in the McKee Nelson New York office.

07-18-2006

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McDonald Hopkins, LLC

D. Joshua Smith Joins the Litigation Department of McDonald Hopkins Co., LPA
D. Joshua Smith has joined the law firm of McDonald Hopkins Co., LPA as an Associate in the Litigation Department. Joshua will focus his practice on intellectual property law including patent procurement and enforcement, and counseling involving noninfringement, patentability, validity and freedom to operate opinions. Joshua has patent experience in the chemical, mechanical, and electro-mechanical fields.

Mr. Smith earned his J.D., in 2005, from Chicago-Kent College of Law and his B.S., in 2002, from the University of Dayton.

McDonald Hopkins is a Cleveland-based law firm focused on the needs of middle and upper-middle market businesses nationally. The firm’s offices are located in Cleveland and Columbus, Ohio, Detroit, Michigan, and West Palm Beach, Florida, and are organized into service departments that include Business Law, Business Restructuring, Litigation, and Estate Planning and Probate Law. More information about McDonald Hopkins can be found at www.mcdonaldhopkins.com.

07-18-2006

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Dinsmore & Shohl LLP

Business Method Patents - Protection of New Business Models and Financial Products and Services
When most people think of a patent, they think of a document that provides legal protection for new devices, chemical compositions, or methods of manufacturing. However, there is another type of patent, the “business method” patent, which is less known but which has become more common since the late 1990’s.

A business method patent generally covers the steps taken in a particular business procedure or model. The business procedure need not be tied to a device, composition, or piece of software, although such patents are sometimes focused on computer operations that implement steps in the process. For example, Priceline® has a number of “reverse auction” patents which are focused on both business procedures and computer aspects. One such patent includes claims relating to the consumer providing an offer to businesses and a business providing an acceptance, and claims relating to the operations of the computer that carries out the payment.

Although such patents are thought of as a recent phenomenon, the roots of the business method patent can be traced through the history of the U.S. Patent Office. Patents can be found from the late 1800’s and early 1900’s which relate to new types of check books, bank account ledgers, insurance forms, and streetcar transfer tickets. Similarly, the 1930’s patent literature includes a patent on a method of buying and selling stock at remote locations, as well as a patent on an outdoor theater for automobiles (the drive-in theater).

Over time, some court decisions indicated that such patents should be prohibited because they were similar to abstract ideas or laws of nature, which are not patentable. However, in the pivotal 1998 case of State Street Bank v. Signature Financial Group, the Court of Appeals for the Federal Circuit ruled that business method inventions were officially fair game for patenting. The State Street case involved a method for making a final share price calculation for a mutual fund partnership, allowing several mutual funds to pool their funds into a single hub for consolidation of costs and tax advantages. The Court laid to rest the “ill conceived” notion that business methods could not be patented, holding that such methods could be patented so long as they produced a ""useful, concrete, and tangible result."" (The other requirements for patenting would also need to be met, such as the requirement that the invention be novel and nonobvious and the requirement that the application be timely filed relative to certain activities involving marketing or disclosure of the invention).

The Internet startup boom, fueled by the State Street decision, created an explosion of business method patent filings. The U.S. Patent Office reports that the number of business method applications rose from a mere 330 in 1995 to a whopping 8700 in the year 2001, and estimates that these filings are continuing at a pace of over 6000 per year. Companies thus continue to obtain such patents regularly. Many applicants are filing for patents on new financial and insurance products and services. For example, some recent patents relate to new methods of deriving annuity rates, creating municipal bonds, and hedging a deferred compensation liability. While the patent offices of many foreign nations have been less than welcoming to business method applications, there is no prohibition in the U.S. against patenting such methods, whether carried out by a computer or by humans.

Business method patents can be used to deter competitors from utilizing a unique business model or feature, or defensively as a bargaining chip against a competitor who threatens one or more of their patents. Such patents can also be used as a source of additional income through licensing. If a particular new method of doing business is core to a company’s business model, or is in an area where competitors are filing frequently, the need for obtaining patent protection is heightened. Of course, the alternative in the absence of a patent is usually that others can freely copy the model, if it can be discerned from publicly available information. Companies should therefore make it their business to consider pursuing patent protection for newly developed business models, procedures and services.

07-18-2006

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Maynard Cooper & Gale, P.C.

Wells Announced as Practitioner-In-Residence at University Of Alabama School Of Law
Maynard, Cooper & Gale, P.C. is pleased to announce that H. Thomas Wells has been named Distinguished Practitioner-in-Residence for the University of Alabama School of Law for Fall 2006. Wells will return to his undergraduate and law school alma mater to offer his veteran expertise and perspective to students. While in law school, Wells was Senior Editor of the Alabama Law Review and a member of the Farrah Order of Jurisprudence and Order of the Coif.

Wells is a founding shareholder of Maynard Cooper and member of the firm’s Class Action Litigation, Complex Litigation, Environmental Litigation and Regulatory Compliance, General Litigation and Product Liability practice groups. His trial practice concentrates on complex mass tort, environmental and product liability cases, often handling the defense of class actions or mass consolidated cases throughout the South. Wells has handled cases in Alabama, Virginia, California, Texas, Ohio, Indiana, Tennessee, Georgia, Mississippi and the District of Columbia. He has argued cases in the Fifth, Eleventh and D.C. Circuits, and one case in the United States Supreme Court.

Wells holds the distinction of being one of only five attorneys in Alabama listed in the International Who’s Who of Product Liability Defense Lawyers. Wells is also listed in Best Lawyers in America®. As an active member of the American Bar Association, he was selected by his peers three times to serve as the Alabama State Delegate to the ABA House of Delegates. In addition, he is the immediate past Chair of the ABA House of Delegates, the second highest office in the ABA. In 1999-2000, Wells served as the Chair of the ABA Section of Litigation, the largest section in the ABA.

The Birmingham-based law firm of Maynard, Cooper & Gale, P.C., with more than 150 attorneys, offers a full array of legal services to a broad and diverse client base consisting of Fortune 500 companies as well as closely held companies, partnerships, professional associations, charities and individuals.

Maynard, Cooper & Gale is Alabama’s only member of Lex Mundi, an international association of more than 140 widely recognized independent law firms, which by membership gives the firm access to high quality local legal expertise throughout the world. The firm is also Alabama’s only member of the Southern Law Network, a regional network of independent law firms. For more information, visit www.maynardcooper.com.

07-18-2006

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Lowis & Gellen LLP

LOWIS & GELLEN LLP WELCOMES PETER S. YUH AS AN ASSOCIATE IN THE DEERFIELD OFFICE
Lowis & Gellen LLP announces that Peter S. Yuh has joined the firm’s Real Estate Department as an associate in its Deerfield office. His practice focuses on commercial real estate matters. Prior to joining Lowis & Gellen LLP, Mr. Yuh worked for the City of Chicago where he was involved in, among other work, municipal prosecutions, ordinance compliance enforcement, and consumer fraud investigations.

Mr. Yuh received his undergraduate degree (B.A., 1997) from Northwestern University and his law degree (J.D., 2005) from Loyola University Chicago, School of Law, where he was managing editor of and published in the Loyola University Chicago, International Law Review. He is admitted to practice in Illinois, as well as before the U.S. District Court for the Northern District of Illinois.

07-18-2006

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